Vander Intermediate Holding III Corporation

Trademark Trial and Appeal Board

Dec 22, 2014

EX (T.T.A.B. Dec. 22, 2014)

This Opinion is not a
Precedent of the TTAB

Mailed: December 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Vander Intermediate Holding III Corporation
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Serial No. 86163005
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Jeffrey P. Thennisch of Ingrassia Fisher & Lorenz,
for Vander Intermediate Holding III Corporation.

Meredith Debus, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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Before Zervas, Kuczma and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Vander Intermediate Holding III Corporation (“Applicant”) seeks registration on
the Principal Register of the mark BLUELINE RENTAL (in standard characters)
for
Rental of construction and building equipment to others,
none of the foregoing services including the provision of
building construction, construction management, general
construction contracting, or general contracting and
Serial No. 86163005
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commercial construction services in International Class
37.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the registered marks BLUELINE & design2 for
“building construction, construction management, and general construction
contracting” in International Class 373 and BLUELINE for “general contracting and
commercial construction services” in International Class 37,4 which are owned by
Blueline Associates, Inc.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Discussion
Our determination of the issue of likelihood of confusion is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA

1 Application Serial No. 86163005 was filed on January 10, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
2
3 Registration No. 4167887 issued on July 3, 2012.
4 Registration No. 4167982 issued on July 3, 2012.

Serial No. 86163005
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1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are
the similarities between the marks and the similarities between services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997).
A. Similarities or dissimilarities of the marks.
We first consider the marks BLUELINE RENTAL and BLUELINE (in
standard character form) and compare them “in their entireties as to appearance,
sound, connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005) quoting du Pont, 177 USPQ at 567.
While we analyze the marks in their entireties, it is well settled that one
feature of a mark may be more significant than another, and it is not improper to
give more weight to this dominant feature when evaluating the similarities of the
marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). Here, the term BLUELINE is the most prominent portion of Applicant’s
mark because it is the first portion of the mark and is more distinctive than the
added term, RENTAL for Applicant’s services and which has appropriately been
disclaimed in the application. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012); In re Dixie Restaurants, Inc., 41 USPQ2d at 1533-34.
Applicant’s mark BLUELINE RENTAL incorporates the entirety of Registrant’s
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standard character mark BLUELINE, adding only the merely descriptive, if not
generic term RENTAL. In general, the addition of merely descriptive matter does
not obviate a finding of similarity. In re Chatam Int’l Inc., 380 F.3d 1340, 71
USPQ2d 1944 (Fed. Cir. 2004).
Thus, while the added term does present some difference in appearance and
sound, the overall commercial impression and connotation remain the same in view
of the dominance of the term BLUELINE in the marks. In view thereof, we find
that the similarities outweigh the dissimilarities.
Additionally, the similarities between Applicant’s mark BLUELINE
RENTAL and the cited registration for the mark outweigh
the dissimilarities. Id. The mark in the cited registration is a composite mark.
In the case of a composite mark containing both words
and a design, the verbal portion of the mark is the one
most likely to indicate the origin of the goods to which it
is affixed.
In re Viterra Inc., 101 USPQ2d at 1908, citing CBS Inc. v. Morrow, 708 F.2d. 1579,
128 USPQ 198 (Fed. Cir. 1983) (internal quotations omitted).
After comparing the marks in their entireties, we find that the with respect
to both of the cited marks, the first du Pont factor favors a finding of likelihood of
confusion.

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B. Strength of the marks.
Applicant argues that the term BLUELINE is weak and entitled to a limited
scope of protection. To support this contention, Applicant submitted information
about fifty-two third-party registrations. When probative, third-party registration
evidence may show that a term carries a well-recognized descriptive or suggestive
connotation in the relevant industry and therefore may be considered somewhat
weak. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015);
Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 115 USPQ2d 1671,
1675 (Fed. Cir. 2015). In this case, the evidence is not probative because it does not
establish that the term BLUELINE carries a well-recognized descriptive or
suggestive connotation in the relevant industry. Applicant submitted information
about various registrations consisting of or containing the terms “BLUELINE,”
“BLUE LINE,” or “BLU-LINE.” Applicant did not submit copies of the registrations
themselves or the electronic versions thereof.5 The information submitted did not
include the names of the current owners of the registrations so we do not know how

5 To make registrations of record, copies of the registrations or the complete electronic
equivalent (i.e., complete printouts taken from the USPTO’s Trademark database) must be
submitted. In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002); In re Volvo
Cars of N. Am. Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998); In re Broadway Chicken Inc.,
38 USPQ2d 1559, 1561 n.6 (TTAB 1996); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532
n.3 (TTAB 1994).
Applicant did not do so. The Examining Attorney objected to consideration of this evidence
in her brief, however, since the objection was not made during examination, we consider it
to be waived. See In re Houston, 101 USPQ2d 1534, 1536 (TTAB 2012) (finding that the
examining attorney’s failure to advise applicant of the insufficiency of the list of
registrations when it was proffered during examination constituted a waiver of any
objection to consideration of that list).
Serial No. 86163005
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many are owned by the same party, nor did it include the registration dates or any
restrictions on the registrations (e.g. disclaimers). Further, the first two
registrations listed are the cited registrations, one of which, Registration No.
4167887, is listed again later in the list. More importantly, with the exception of the
cited registrations, all of the registrations are for unrelated goods and services6 so
they cannot establish the strength of the mark in the construction and building
equipment industry. The unrelatedness of the goods and services in the
registrations referred to by Applicant and the services at issue in this case
distinguishes this case from In re Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015),
upon which Applicant explicitly relied in its appeal. Appeal Brief, 14 TTABVUE 4.
In Thor Tech, the “[a]pplicant submitted fifty sets of third-party registrations for
the same or similar marks registered for automobiles, trucks or sport utility
vehicles on the one hand and recreational vehicles, travel trailers, and/or motor
homes on the other, which are owned by different entities.” Thor Tech, at 1548.
Significantly, seven sets of the third party registrations appeared to be owned by
the registrant and by the applicant or a related company of the applicant. The mark

6 For example, Reg. No. 4022793 – BLUE LINE for flashlights, Reg. No. 3639632 - TEWS
BLUELINE for data processing equipment and computer design services, Reg. No. 3136723
– BLUELINE for plastic tubing for use in irrigation, Reg. No. 3691889 for dietary and
nutritional supplements, Reg. No. 3375617 for model trains, Reg. No. 3297048 BLUELINE
for computer hardware and software for power plants and power generating systems,
4481520 BLUELINE COBALT for carpet and floor cleaning machines, Reg. No. 3442662 –
BLUELINE for insurance claims administration, Reg. No. 3877282 – BLUELINE for wines,
Reg. No. 2884918 – BLUELINE for dentures, Reg. No. 3544001– BLUELINE for computer
software for educational services rendered online, Reg. No. 4234027 – BLUELINE PRO-
GRADE for athletic tape, Reg. No. 4234027 – BLU-LINE for sputtering machines, Reg. No.
4224220 - DEFENDING THE BLUE LINE for providing hockey camps and equipment, and
Reg. Nos. 4091048 (BLUELINE) and 4091038 (BLUE LINE) for bar and restaurant
services, Reg. No. 3925175.
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in each of the seven sets was identical; one registration for each mark covered land
vehicles while the other covered recreational trailers. Id. As discussed above, in the
case at bar, the only registrations for related goods or services are Registrant’s.
Accordingly, we find that the evidence does not establish that the term
BLUELINE is used or registered in connection with any relevant goods or services
and thus, the sixth du Pont factor favors a finding of likelihood of confusion.
C. Similarity or dissimilarity of the services and channels of trade.
We consider next the second and third du Pont factors, the similarity of the
services and the channels of trade. When determining the relationship between the
services,
[i]t is well settled that the issue of likelihood of confusion
between applied-for and registered marks must be
determined on the basis of the goods [and service] as they
are identified in the involved application and cited
registration, rather than on what any evidence may show
as to the actual nature of the goods [and services], their
channels of trade and/or classes of purchasers.
In re Total Quality Group Inc., 51 USPQ 1474, 1476 (TTAB 1999). See also Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 - 1162 (Fed. Cir. 2014). The services as recited in the application are: “rental of
construction and building equipment to others, none of the foregoing services
including the provision of building construction, construction management, general
construction contracting, or general contracting and commercial construction
services.” The services as recited in the cited registrations are “building
construction, construction management, and general construction contracting”
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(BLUELINE & design) and “general contracting and commercial construction
services” (BLUELINE). To determine if the services are related, we compare the
services, as recited, not as actually offered.
Applicant contends that the services are not related because
the business services offered by the Applicant and those
registered in the cited ‘887 and ‘982 registrations
contemplate different forms of commercial transactions or
varying complexity, timing, and contractual significance.
Most simply stated, the Applicant’s services consist of
“rental of construction and building equipment to others”,
an inherently temporary transaction where the
equipment or item will be received, use [sic] for a
specifically defined purpose, and then returned to the
Applicant’s place of business. This is not the same type
of transaction where the consumer would engage with a
party for of [sic] “Building Construction; Construction
Management; General Construction Contracting” set
forth in the cited ‘887 registration or the “General
Contracting And Commercial Construction Services” set
forth in the cited ‘982 registration.
Applicant’s argument is not persuasive. To find a likelihood of confusion, the
services need not be identical or even competitive. On-line Careline Inc. v. Am.
Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000). The respective
[services] need only be “related in some manner and/or if the circumstances
surrounding their marketing [be] such that they could give rise to the mistaken
belief that [the services] emanate from the same source.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007).
The services in the registrations, which are not restricted to commercial
construction, include “building construction and general contracting.” These
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services may be performed on a large or small scale. Further, the recitation of
Applicant’s services are not restricted to short term rentals of construction and
building equipment or the “do-it-yourself” consumer market and thus the
equipment rented could be rented to construction professionals for use in large or
small scale projects. Further, Applicant’s equipment could be utilized in the
performance of Registrant’s services. Consumers seeing Applicant’s equipment at
one of Registrant’s construction sites may believe that the equipment and services
are either from the same source or from a related source.
The Examining Attorney introduced the following third-party registrations
covering both Applicant’s and Registrant’s services which were attached to the
Office Action dated April 1, 2014:
- Registration No. 3899968
Mark:
Class 37 Services: construction information services,
namely, information in the fields of building construction
and demolition of buildings; rental of construction
equipment; building construction supervision; building
construction; and demolition of buildings
Owner: Corporate Properties of the Americas, LLC7
- Registration No. 4104999 for the mark OSC
(standard characters)
Class 37 Services: House and building demolition
services; wrecking services; asbestos removal;

7 This registration is owned by a Delaware corporation but is based on the corporation’s
ownership of a registration in Mexico.
Serial No. 86163005
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environmental containment, namely, localization, drying
and cleaning of particulate and moisture contaminants for
buildings and contents therein; general construction
contracting; leasing of construction equipment; rental of
construction and building equipment; rental of
construction machines and apparatus; repair and
maintenance of construction machines and apparatus;
building construction, remodeling and repair; construction
and renovation of buildings
Owner: OSC Holding, Inc.

- Registration No. 4483683
Mark:
Class 37 Services: Building construction services; concrete
pouring and forming for buildings and other commercial
or public concrete structures; foundation contractor
services; installation services of building scaffolds,
working and building platforms; leasing of construction
equipment; rental of building scaffolds, working and
building platforms; rental of construction equipment
Owner: David Lawrence Strickland, III; and
- Registration No. 4490929
Mark:
Class 37 Services: Building construction services;
construction of telecommunication towers; crane rental
and leasing for construction purposes; rental of
construction and building equipment
Owner: RPM Cranes, LLC.
While not an extensive display, these registrations serve to suggest that both
Applicant’s services and the Registrant’s services are of a kind that emanate from a
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single source. See In re RiseSmart Inc., 104 USPQ2d 1931, 1934-1935 (TTAB 2012);
In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); and In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). Further, the
Examining Attorney submitted Internet evidence of third-party use of the same
mark in connection with both construction services and rental of construction
equipment. For example:
Zartman Construction, Inc. offers construction services,
including commercial institutional, college building
addition, college renovations and equipment rental,
including cranes, concrete pumps, truck trailers, lifts,
excavating equipment, forklifts and storage containers –
www.zartman.com, accessed on June 6, 2014 (Office
Action dated June 6, 2014);

Williams Construction offers general contracting,
construction management, design build services,
aggregate, concrete products, and rental equipment -
www.williamsconstruction.biz/?sec=About%20Us ,
accessed on June 6, 2014 (Office Action dated June 6,
2014);

B&B Crane Service LLC “is a full-service industrial
general contractor providing industrial, mechanical,
electrical, plumbing and general construction services …,”
which also rents cranes – bandbcraneservice.com/
construction/ – accessed on December 22, 2014 (Office
Action dated December 22, 2014); and

OTAK Group is “a civil engineering, general construction
and design/build company,” which offers equipment
rentals – www.otakgroup.com, accessed on December 22,
2014 (Office Action dated December 22, 2014).

The Internet evidence establishes that both general construction/contractor
services and rental of construction equipment are offered through the same
channels of trade (on-line construction company websites) to the same customers.
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Thus, the second and third DuPont factor favors a finding of likelihood of
confusion.
D. Sophistication of customers.
Applicant contends that the relevant purchasers of its services are sophisticated
because they “would command discrimination and studied selectivity or, at least
cognitively distinguish between their specified need to ‘rent’ building or
construction equipment to perform a defined task, actually perform that task, and
then return the rented building or construction equipment – with full knowledge
that the transaction was a short-term rental of the equipment not a purchase of any
equipment, let alone a contract to engage the services of another (such as the cited
registrant) to actually perform any building or construction services – albeit in the
nature of commercial, industrial, or residential construction.” Appeal Brief, 14
TTABVUE 21.
Applicant appears to misconstrue the concept of a sophisticated purchaser. The
cognitive ability to distinguish between rental services and construction services is
not determinative. The question is whether the type of services is such that
consumers will exercise care in purchasing them so that the use of similar marks
would not confuse them as to the source of the services. For example, purchasers of
lemons and oranges are cognitively aware that lemons are not oranges, however,
they may not exercise care to distinguish between similar marks on the goods.
Applicant analogizes the sophistication of its rental services to “other somewhat
needs [sic]for ‘rental’ items that a consumer develops from time-to-time, such as
Serial No. 86163005
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renting tables, chairs, and outdoor tents for a family event, school graduation party,
etc.” Appeal Brief, 14 TTABVUE 23. Applicant contends that these consumers are
sophisticated purchasers because they
would exercise this type of consumer process to ensure
that they rented the desired number of chairs and tables
needed for their own planned event, use them for the
event, and then return them to the place of rental in the
designated timeframe. Such consumers are likewise
keenly aware of the function and performance of the goods
and services they are looking to purchase. Such
consumers rarely buy on impulse, instead buying based
on information or experience relating to the quality of a
particular source of the goods/services (as well as renting
what “they” need) – the more careful the typical potential
purchaser is expected to be, reducing the likelihood of
confusion.
Id. There is no evidence supporting Applicant’s contention that these consumers
“rarely buy on impulse, instead buying based on information or experience.”
Similarly, while Applicant’s purchasers would clearly be able to distinguish between
the type of construction equipment needed to complete a task, there is no evidence
that Applicant’s purchasers, and in particular, those performing do-it-yourself
tasks, buy based on information or experience relating to the particular sources of
what they need to buy or rent.
Further, the fact that “the relevant class of purchasers may exercise care does
not necessarily impose on that class the responsibility of distinguishing between
similar marks for similar [or closely related] services. Human memories even of
discriminating purchasers are not infallible.” In re Research and Trading Corp., 793
F2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (internal citation omitted). Since the
purchasers of both Applicant’s and Registrant’s services may be sophisticated and
Serial No. 86163005
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exercise care in the purchase of the services, but are not necessarily so, we find the
fourth du Pont factor to be neutral.
E. Conclusion.
We conclude, after considering all evidence and arguments bearing on the du
Pont factors, including the evidence and arguments that we have not specifically
discussed herein, that there is a likelihood of confusion between Applicant’s mark
BLUELINE RENTAL for “rental of construction and building equipment to others,
none of the foregoing services including the provision of building construction,
construction management, general construction contracting, or general contracting
and commercial construction services” and Registrant’s marks BLUELINE and
BLUELINE & design for “building construction, construction management, and
general construction contracting”; and “general contracting and commercial
construction services.”
Decision: The refusal to register Applicant’s mark BLUELINE RENTAL is
affirmed.